2024 was an active year in Canadian patent law, with the Federal Court issuing several decisions on the merits regarding invalidity and/or infringement. The courts also considered issues of the regulation of patent agents, due care in the context of paying maintenance fees, eligibility for listing a patent on the Patent Register, and the jurisdiction of the Patented Medicines Prices Review Board, among others.
In our annual review of developments in Canadian patent law, we considered over 60 court decisions reported last year. In this article, we highlight a significant statutory change and a selection of interesting points addressed in the reported decisions.
For a comprehensive review of recent Canadian pharmaceutical decisions and developments, read our 2024 highlights in Canadian life sciences IP and regulatory law.
1. Canada's new patent term adjustment system
Canada's patent term adjustment (PTA) system came into force on January 1, 2025, as required for compliance with Canada's obligations under the Canada-United States-Mexico Agreement (CUSMA), which replaced the North American Free Trade Agreement (NAFTA) of 1994. PTA compensates the patentee for unreasonable delay by the Canadian Intellectual Property Office (CIPO) in the issuance of a patent.
The official application fee of CAD $2500 to obtain a PTA calculation by CIPO is substantial, and few patents ultimately will qualify for PTA. Counterintuitively, any delay by the applicant has little bearing on PTA. The one simple step applicants can take to avoid loss of potential PTA is to defer submitting the examination request and fee, and most applicants do this anyway. Therefore, the PTA system is unlikely to change Canadian patent prosecution strategy or practice materially or receive much use.
For more details on the new PTA system, please see our article, "Canada finalizes Patent Term Adjustment Rules".
2. Claim construction: let's talk about "about"
Patent claims often include the term "about" to provide scope around numerical values. Although CIPO often objects to this term as being unclear, such objections usually can be overcome and the Federal Court has regularly held that "about" is not indefinite, doing so again in 2024 in Medexus Pharmaceuticals Inc v Accord Healthcare Inc, 2024 FC 424. Indeed, including the term "about" may prove important.
In Boehringer Ingelheim (Canada) Ltd v Jamp Pharma Corporation, 2024 FC 1198, one of the issues considered by the Federal Court was the scope of a claim defining components of a formulation in weight percentage amounts specified to two decimal places and not qualified by the term "about". The Court rejected Boehringer Ingelheim's argument that the claim allows for minor variability of up to 5% of the specified wt.%, noting that the inventors (1) did not use the word "about" to qualify the precise weight percentage amounts claimed and (2) elsewhere used ranges in claims that were not to be limited to a specific value.
For more details on the decision, please see our article, "Boehringer Ingelheim succeeds in nintedanib PMNOC action against JAMP".
3. Claim construction: Federal Court considers what it means to "prevent" a disease or disorder
Claims related to a therapeutic indication often refer to the treatment and/or the prevention of that indication. Treatment and prevention are terms routinely used in everyday conversation and may be seen to have "conventional" meanings. However, adopting such "conventional" meanings may disregard important contexts provided by the patent or known to persons skilled in the art.
In Boehringer Ingelheim (Canada) Ltd v Jamp Pharma Corporation, 2024 FC 1198, one of the issues before the Federal Court was the meaning to be given to the expressions "treatment or prevention of idiopathic pulmonary fibrosis [IPF]" / "prevention or treatment of IPF". The Court found that a skilled person would understand "prevention" to mean prevention of the progression of the disease state and the development of symptoms arising from IPF. This was based in part on the finding that a skilled person would have known that prevention can be either primary prevention'seeking to block disease from forming in the first place'or secondary prevention'aimed at preventing a disease from progressing further, and further that primary prevention of IPF was not possible.
Jamp's appeal of the decision (Federal Court of Appeal file A-306-24) was dismissed on January 9, 2025.
4. Claim construction: can the purpose of essential claim features affect claim construction?
Claim construction precedes questions of validity and infringement and is often determinative of one or both issues. This was the case in AGI Suretrack LLC v Farmers Edge Inc, 2024 FC 934, where the Federal Court considered a number of issues in claim construction, including arguments regarding claim differentiation, the presumption of claim consistency, whether undefined terms that are used generally in fields other than the field of the patent at issue should be interpreted based on their more general use or in view of the field of the invention, and the "essentiality" of claim features.
On the last point, when considering the feature "extract content from one or more messages transmitted on the message bus and use the extracted content to determine that there is a match between the farming implement used to perform the farming operation and the known farming implement of the implement profile" (underscoring in original) the Court addressed the distinction between (1) relying on the purpose of an essential claim feature (which purpose may not be recited in the claim) to give meaning to another claim feature, and (2) reading an essential feature into a claim based on a possible purpose of a claim feature, highlighting that:
[T]here is a difference between concluding, as I have, that the POSITA would understand the phrase determine that there is a match in a way to...
